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Expediting Patent Prosecution in Canada

May 17, 2017

In Canada, as in many other jurisdictions, a patent application is only examined upon request. To avoid abandonment of an application, a request for examination must be made within five years of the filing date of the application. Applications are generally examined sequentially according to the order in which the request for examination was made, and the turnaround time of a Canadian patent (i.e. time from examination request to patent grant) is, on average, more than 35 months[1]. For those applicants who wish to reach final disposition of their application on an accelerated basis, the Canadian Intellectual Property Office provides various mechanisms by which examination of an application may be expedited.

Advanced Examination – Special Order

The examination of an application may be advanced out of its routine order on the request of any person (i.e. the applicant or a third party) who pays a prescribed fee ($500), if the Commissioner of Patents determines that failure to advance the application is likely to prejudice that person’s rights. No express guidance has been provided by CIPO as to what circumstances would allow a person to qualify for a Special Order, but Special Orders have historically been obtained without difficulty. A Special Order will only be granted if the application has been opened to public inspection and a request for examination has been made. Importantly, an application that has been advanced out of its routine order will be returned to its routine order if the Commissioner, at the request of the applicant, extends the time fixed for doing anything (e.g. responding to an Examiner’s Report, etc.) in respect of the application or if the application has been deemed abandoned (whether or not it is ultimately reinstated).

Green Technology

The Patent Rules provide a procedure for accelerating the examination of applications relating to environmental (i.e. “green” or “clean”) technologies. An application will be advanced out of its routine order if the applicant submits a declaration indicating that the application relates to technology “the commercialization of which would help to resolve or mitigate environmental impacts or conserve the natural environment and resources”. No government fee is required for making such a request, and CIPO will not question the accuracy of the information contained in the declaration provided by the applicant. As with the Special Order procedure, the application in question is required to be opened to public inspection and a request for examination must have been made in order for the request to be granted.

Patent Prosecution Highway (PPH)

Under the PPH program, CIPO can reap the benefits of search and examination results produced by another participating patent office, allowing the prosecution of the Canadian application to be expedited. In order to qualify for the PPH, the claims of the CIPO application for which the PPH request is made must “sufficiently correspond” to the claims in a corresponding application (which shares the same priority date as the CIPO application) that are indicated to be allowable by the partner patent office. That is, all claims of the CIPO application on file for examination under the PPH must be of similar or narrower scope than the allowed claims of the corresponding application. The PPH request will only be granted if the CIPO application has been opened to public inspection, a request for examination has been made, and substantive examination of the application has not begun (i.e. a first office action has not been issued). No fee is required for submitting a PPH request.

The PPH provides applicants with a number of strategic options. As examination of an application can be deferred for up to five years, it may be prudent for an applicant to take a “wait and see” approach, by considering the disposition (e.g. rejection or grant) of the application at the other participating patent offices before deciding on whether to proceed with requesting examination in Canada. This can lead to saving the cost and time associated with independently prosecuting the Canadian application. Since a PPH request can be made based on more than one corresponding patent application, it may be possible to combine the allowed claims of multiple applications into a single Canadian application, thereby saving the costs associated with filing separate applications (there are no excess claim fees in Canada). Additionally, where a patent application relates to green technology, the applicant can request expedited examination and take advantage of the PPH at partner patent offices, which can potentially fast-track prosecution in those other jurisdictions (including U.S., Japan, Korea, Germany, etc.).

In all cases where an application is advanced for examination, CIPO commits to providing a first office action within three months of receiving the request for expedited examination and verifying compliance with the requirements. Additionally, until a patent application is approved for allowance, CIPO will provide a response to the applicant within two months of the date of any correspondence, including responses to Examiner’s Reports, received by CIPO.